Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA289746
`ESTTA Tracking number:
`06/15/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184047
`Defendant
`The TriZetto Group, Inc.
`Daniel A. Crowe, Esq.
`Bryan Cave LLP
`One Metropolitan Square, 211 N. Broadway, Suite 3600
`St. Louis, MO 63102-2733
`UNITED STATES
`mapaskar@bryancave.com
`Motion for Summary Judgment
`Mark A. Paskar
`mapaskar@bryancave.com, dacrowe@bryancave.com
`/Mark A. Paskar/
`06/15/2009
`Cross MSJ.pdf ( 98 pages )(9953699 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial Nos. 77/029,672
`Filed on October 26, 2006
`Published in the Trademark Official Gazette on May 29, 2007
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`FARMACO—LOGlCA B.V.,
`Opposer
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`'
`
`VS.
`THE TRIZETTO GROUP,
`Applicant.
`
`Commissioner for Trademarks
`
`Trademark Trial and Appeal Board
`P.O. Box I451
`
`Alexandria, VA 223 I 3-1451
`
`Opposition No. 91 184047
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`APPLICANT THE TRIZETTO GROUP, INC.’S CROSS MOTION
`FOR SUMMARY JUDGMENT
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`COMES NOW Applicant The TriZetto Group, Inc. (“Triletto”), by and through its attorneys and
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`pursuant to Fed. R. Civ. P. 56, respectfully moves the Trademark Trial and Appeal Board (“Board”) for
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`summaryjudgment dismissing Opposition No. 91 184047.
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`In support of said motion, TriZetto states:
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`1.
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`Opposer Farmaco-Logica B.V. (“Farmaco”) is judicially estopped from asserting that a
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`likelihood of confusion exists between its PHACET registration (Reg. No. 3,482,938) and TriZetto’s
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`FACETS mark, as a result of inconsistent positions and representations made to the Board and TriZetto in
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`the course of prior Trademark Opposition No. 91 175355.
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`2.
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`Even in the event Farmaco is allowed to continue to assert
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`its ill—gotten PHACET
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`registration (Reg. No. 3,482,938) in this proceeding, under Morehouse Mfg. Corp. v. J. Strickland & Co.,
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`Farmaco will not be further damaged by another registration for FACETS by TriZetto because TriZetto
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`already owns numerous existing registrations for its FACTS mark (and variations thereof) in connection
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`with identical software, including but not limited to, U.S. Reg. No. 3,482,938.
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`A Memorandum In Support of Cross Motion For Summary Judgment (the “Memorandum”) is
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`filed herewith, together with the Declarations of James J. Sullivan, Terry Ann Mayer, Linda M. Merritt,
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`and Kendall Thiessen, and exhibits thereto,
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`in support of the motion (the “Declarations”). The
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`Declarations and Memorandum demonstrate that there is no dispute as to any material fact that would
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`preclude the award of summaryjudgment dismissing Opposition No. 91 184047.
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`WHEREFORE, Applicant, The TriZetto Group, Inc. respectfully requests that the Board grant
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`Applicant’s Cross Motion for Summary Judgment and grant any other relief that the Board deems
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`necessary and proper.
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`Respectfully submitted,
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`7/r/(4M»Z2
`
`Daniel A. Crowe
`Mark A. Paskar
`
`Walter P. Opaska
`BRYAN CAVE LLP
`
`21 l N. Broadway, Suite 3600
`St. Louis, Missouri 63102
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`Tele: (314) 259-2488
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`Attorneys for Applicant The TriZetto Group, Inc.
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`CERTIFICATE OF FILING
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`I hereby certify that this Applicant The TriZctto Group, lnc.’s Cross
`Motion For Summary .|udgmcnt
`is being filed via thc Boards
`ESTTA electronic filing procedure, on June 15, 2009.
`
`Mark A. Paskar
`
`

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`CERTIFICATE OF SERVICE
`
`The undersigned attorney hereby certifies that a true and accurate copy of Applicant The TriZetto
`lnc.’s Cross Motion For Summary Judgment was transmitted by FedEx International and
`Group,
`electronic mail on June 15, 2009, to the following party/representative of record:
`
`Mr. Paul Kuks
`
`Farmaco-Logica B.V.
`Wolkendek I7
`3454 TG DE MEERN
`The Netherlands
`
`Paul.kuks(ii)fannlognet
`
`Representat'ive_for Opposer Farmaco-Logica B. V.
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ln the Matter of Application Serial Nos. 77/029,672
`Filed on October 26, 2006
`Published in the Trademark Official Gazette on May 29, 2007
`
`Opposition No. 91 184047
`
`FARMACO-LOGICA B.V.,
`Opposer
`
`I
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`vs.
`THE TRIZETTO GROUP,
`Applicant.
`
`Commissioner for Trademarks
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
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`MEMORANDUM IN SUPPORT OF APPLICANT THE TRIZETTO GROUP, INC.’S
`CROSS MOTION FOR SUMMARY JUDGMENT
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`COMES NOW Applicant The TriZetto Group, Inc. (“TriZetto”) and files its Memorandum in
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`Support of its Cross Motion For Summary Judgment.
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`Farmaco-Logica B.V. (“Farmaco”) is judicially
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`estopped from asserting that a likelihood of confusion exists between its U.S. Trademark Reg. No.
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`3,395,039 (the “PHACET Registration”)'/ and TriZetto’s FACETS application because the Trademark
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`Trial and Appeal Board (“Board”) previously ruled in a prior opposition between the parties that no
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`likelihood of confusion exists between these very marks for identical goods.
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`In the previous opposition,
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`Farmaco achieved registration of the very PHACET Registration it now asserts by repeatedly and
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`consistently taking the position that no likelihood of confusion existed between its PHACET Registration
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`l l6243
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`and TriZetto’s prior FACETS mark. Now, after the Board dismissed TriZetto’s previous opposition
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`with prejudice and the PHACET mark registered, Farmaco asks the Board to ignore its previous decision
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`on the merits and find that a likelihood of confusion exists between the exact same marks for the exact
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`same goods.
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`Farmaco’s about-face is an affront to the integrity of the Board, its time, resources, and the
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`finality of its decisions and is highly prejudicial to TriZetto. Accordingly, Farmaco should bejudicially
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`estopped from reversing its position regarding a likelihood of confusion between its PHACET
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`Registration and TriZetto’s FACETS mark.
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`Even in the event the Board determines Farmaco is not judicially estopped from taking a
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`completely contrary position in the present case, there is no issue of disputed material fact that Farmaco
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`will not be damaged by another TriZetto registration for FACETS. TriZetto already owns an existing
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`registration for the identical mark (as well as registrations for variations of its FACETS mark) for
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`identical software. Because TriZetto previously registered FACETS for identical software, under the
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`Morehouse defense, Farmaco cannot be damaged by yet another registration for the identical mark on
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`identical software, and its claims in this opposition must be dismissed.
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`FACTUAL BACKGROUND
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`1.
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`TriZetto’s Use and Registration of Its FACETS Marks.
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`TriZetto, or a predecessor-in-interest, has used the FACETS mark since at least as early as 1993
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`for various goods and services in the field of managed health care. See Declaration of J. Sullivan
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`(“Sullivan Decl.”) 1] 3 (attached as Ex. 1). Among other uses, TriZetto has used the mark continuously
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`since at
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`least as early as July I2, 1993 in connection with computer software for health care plan
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`management and administration and for computer software for claims and benefits administration for
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`Medicare and Medicaid managed care.
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`_S_§e i§|_.; Declaration of T. Mayer (“Mayer Decl.”) 111] 4-7
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`(attached as Ex. 2). TriZetto delivers its FACETS software to customers in two ways.
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`Sefi i_<L at 1] 9.
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`”
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`TriZetto utilizes the defined term “PHACET Registration” herein to refer to both US. Trademark Reg. No.
`3,395,039 and the application filed by Farmaco on November 8, 2005 (U.S. Trademark App. Serial No.
`79/021,243) that would eventually mature into U.S. Trademark Reg. No. 3,395,039.
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`First, TriZetto can provide a customer with a copy of the FACETS software, and the customer will install
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`the software in the customer’s or a third party’s data center.
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`fie i_d_. Alternatively, TriZetto will offer
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`to “host” its FACETS software for the customer at TriZetto’s data center and will provide the customer
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`with remote access to the software.
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`§e_e i_d_.
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`In either case, the user interface and functionality of the
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`software is identical; the alternatives are merely different ways for the customer to access and use the
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`same software. See Q at 1] 11. The “hosted” method of delivery, involving the installation of the
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`software at TriZetto’s facilities,
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`is referred to by TriZetto as its “application service provider (ASP)”
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`services, which are reflected in, among others, TriZetto’s U.S. Trademark Reg. No. 3,482,938 (the “’938
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`Registration”), a status and title copy of which is attached to the Sullivan Declaration as Exhibit A. See
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`Sullivan Decl. 1] 6 and Ex. A thereto.
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`TriZetto currently owns no less than seven registrations for its FACETS mark (and variations
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`thereof).
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`§e_e Sullivan Decl. fllfil 6 and 7 and Exs. A and B thereto. Among said registrations, TriZetto
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`owns the ’938 Registration for the mark FACETS in standard characters for “application service provider
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`(ASP) featuring software for health care plan management and administration; implementation,
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`maintenance and support of computer software; application service provider (ASP)
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`featuring
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`software for claims and benefits administration for Medicare and Medicaid managed care” in
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`International Class 42, claiming a date of first use ofJuly l2, 1993 g Q at 1] 6 and Ex. A thereto.
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`TriZetto filed U.S. Trademark Application No. 77/029,672 (the ’672 Application) with the U.S.
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`Patent and Trademark Office (“PTO”) on November 1, 2006 seeking to register the mark FACETS in
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`standard characters for “computer software for health care plan management and administration;
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`computer software for claims and benefits administration for Medicare and Medicaid managed
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`care,” in lnternational Class 9, claiming a date of first use ofJuly I2, 1993. The ’672 Application is the
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`subject of the present opposition.
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`II.
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`The Prior Opposition.
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`in 2005, well over a decade after TriZetto began using its FACETS mark in connection with,
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`him a_|ia_1, software used in the managed health care field, Farmaco applied to register PHACET on the
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`basis of Trademark Act Section 66(a) for, among other things, “[c]entral processing units and data
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`processors for the reproduction, storage and archiving of data in the health care field; computers,
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`computer peripherals, and computer software for recording patient health data, in the health care field” in
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`Class 09. E Declaration of P. Kuks in Support of Farmaco-Logica’s Motion For Summary Judgment
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`to
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`(“Kuks Decl.”) and Ex. A thereto; Sullivan Decl. 1]1] 3-5; Mayer Decl. 1]1] 4-7.
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`Prior to its 2005
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`filing, Farmaco had never used the PHACET mark in the United States,
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`in connection with goods or
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`services of any kind. % Declaration of L. Merritt (“Merritt Decl.”) 1] 7 (attached as Ex. 3) and Ex. C
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`thereto, Response Nos. 36-40 at p. 13-14.
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`In January 2007, TriZetto filed Opposition No. 91175355 (the “Prior Opposition”) to the
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`application that would later become the PHACET Registration on the ground that Farmaco’s PHACET
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`mark so resembled various senior TriZetto FACETS marks, both registered and at common law
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`(collectively, the “TriZetto Marks”) as to be likely, when used in connection with Farmaco’s goods to
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`cause confusion, or to cause mistake, or to deceive. m Merritt Decl. 1] 4 and Ex. A thereto. TriZetto
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`opposed the registration of Farmaco’s PHACET mark based on its initial concerns that Farmaco would
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`use the mark in the field of managed health care and that the apparent similar pronunciations and
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`appearances of PHACET to TriZetto’s FACETS marks were likely to cause confusion.
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`gag id.
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`Significantly, TriZetto’s opposition to the PHACET Registration was explicitly based on TriZetto’s
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`priority in use of its FACETS mark in connection with “goods and services in the field of managed health
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`care, includingcomputer software and services as an application service provider...”
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`See Merritt Decl.
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`1] 4 and Ex. A thereto at 1]
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`l (emphasis added). Accordingly, one of the primag; issues in the Prior
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`Opposition was whether the PHACET Registration caused a likelihood of confusion with respect to
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`TriZetto’s prior common law rights in its software for the managed health care industgg.
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`In its Amended Answer in the Prior Opposition, Farmaco flatly denied that any likelihood of
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`confusion existed between the PHACET Registration and the TriZetto Marks, including TriZetto’s prior
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`use of FACETS in connection with its software products.
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`_S_e_e_ Merritt Decl. 1] 5 and Ex. B thereto at 1] 6.
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`Moreover,
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`in addition to denying that any likelihood of confusion existed, Farmaco asserted the
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`following additional defenses:
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`The
`l 1. There are important differences between the word marks FACETS and PHACET.
`different letters at the beginning of both marks lead to different visual appearances of the marks.
`Moreover, if [Farmaco’s] and [TriZetto’s] marks were to appear in any alphabetical listing,
`it
`would be under ‘F,’ in the one use, and under ‘P’ in the other.
`Finally, the word ‘facet’ appears
`in most English dictionaries (such as The American Heritage Dictionary of the English Language,
`4th ed. 2000) whereas the word ‘phacet’ does not. These differences will prevent purchasers
`and prospective purchasers of |Farmaco’s| and |TriZetto’s] goods and services fron3__being
`9_qn_fus_e_d, mistaken, or deceived.
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`12. The application of of [sic] computer systems in health care processes has a major impact on
`the workflow, efficiency and quality of these processes.
`The costs associated with the
`procurement and implementation of such systems and related services are many thousands of
`dollars and they are not sold at retail.
`For these reasons, purchasers and pfipectjflpurchasers
`of _[_Farmaco’s] services and |TriZetto’s| goods and services,
`i.e. health care institutions and
`professionals, are sophisticated and highly professional and take great care before purchasing
`such goods and services. Where sophisticationJ__e2gpeitj§e and care are in_y_o_lv_ed
`in the
`purchasing process, there is no likelihood of confusion, mistake, or deception.
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`(emphasis added). E Merritt Decl. 1]5 and Ex. B thereto at W 11-12 (emphasis added).
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`Farmaco
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`further asserted that FACETS is “not a particularly distinctive mark” therefore “eliminat[ing] any
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`likelihood of prospective purchasers going [sic] to be misled to believe that goods and services offered
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`under the PHACET mark emanate from or may otherwise be associated with Opposer.” fl Merritt
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`Decl. 1] 5 and Ex. B thereto at 1] l3.
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`These above positions and statements were not Farmaco’s only unequivocal assertions regarding
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`the supposed absence of a likelihood of confusion during the Prior Opposition.
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`Farmaco responded to
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`TriZetto’s Request for Admission in the Prior Proceeding with a significant denials, namely:
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`RE! QUEST NO. 32:
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`Admit or deny Applicant’s use of Applicant’s Mark [i.e., the PHACET mark] in connection with
`Applicant’s Goods and Services is likely to cause confusion with Opposer’s use of Opposer’s
`FACETS mark.
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`RESPONSE:
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`Applicant denies this allegation.
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`S_e_e_ Merritt Decl. 1] 7 and Ex. C thereto at p. 12.
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`In its Responses to Requests for Admissions, Farmaco
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`further denied:
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`(i)
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`there was any actual confusion between the marks (Request No. 33);
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`(ii)
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`that the marks were phonetically similar (Request No. 2l);
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`(iii)
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`that the marks created a similar commercial impression (Request No. 22);
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`(iv)
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`that the marks were visually similar (Request No. 23); and
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`(v)
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`that the field of health care encompassed the field of managed health care (Request No.
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`42).
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`_S_e_e_ Merritt Decl. 1] 7 and Ex. C thereto at pp. 8-9 and l2-l4.2/
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`In light of Farmaco’s vehement and consistent position of no likelihood of confusion, TriZetto
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`contacted Farmaco in an attempt to resolve the opposition amicably.
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`§e_e Declaration of K. Thiessen
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`(“Thiessen Decl.”) W 3-4 (attached as Ex. 4). During such discussions, Farmaco continued its
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`vehement and consistent denial of any likelihood of confusion between TriZetto’s FACETS mark and its
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`PHACETS mark. Q at ll 4.
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`ln correspondence with TriZetto in the course of the Prior Opposition,
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`Farmaco’s managing director, Paul Kuks, gave written and oral assurances that Farmaco saw no
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`similarity between PHACET and FACETS and maintained there could be no likelihood of confusion
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`because, among other reasons, the marks were distinguishable and PHACET would not be registered or
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`used for the same goods and services as TriZetto’s FACETS mark.
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`S_e§ Q at 1111 4-6.
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`For example,
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`during the course of the parties’ discussions, Farmaco stated:
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`“I continue to believe that a coexistence of your company’s FACETS marks and my company’s
`PHACET (not PHACETS) mark is possible without [any restrictive agreement between the
`parties].”
`lgl_. at 1[ 7 and Ex. A thereto; and
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`2/
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`TriZetto concedes that under Fed. R. Civ. P. 36(b) “[a]n admission under this rule is not an admission for
`any other purpose and cannot be used against the party in any other proceeding.” TriZetto does not,
`however, seek to use admissions, but rather Farmaco’s denials. Moreover, TriZetto does not cite
`Farmaco’s denials herein in order to bind it to any particular position, but instead merely to demonstrate
`Farmaco’s clearly inconsistent position in the Prior Opposition.
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`“I do not think that there is any possible confusion between trademarks used by your company
`and my company’s trademarks.”
`l_d_.
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`Accordingly,
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`in reliance upon Farmaco’s positions and representations in the pleadings,
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`its
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`discovery responses and in discussions between the parties during the course of the Prior Opposition,
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`TriZetto withdrew its opposition stating, “[i]n response to Opposer’s discovery requests, Applicant has
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`represented that (I) it has not yet used the PHACET mark in the U.S.; (2) that its intended use of the
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`PHACET mark will encompass only those goods and services identified in the application, i.e., goods
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`and services ‘in the field of health care’; and (3) that ‘the field of health care’ does not encompass the
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`‘field of managed health care.’ Based on Applicant’s clarification as to its field of intended use,
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`Opposer agrees that the field of use for its FACETS mark is distinct from Applicant’s intended field of
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`use for the PHACET mark.”
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`fig Merritt Decl. 1[8 and Ex. D thereto at pp. 1-2.
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`In response to
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`TriZetto’s withdrawal, the Board dismissed the Prior Opposition with prejudice.
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`_S_@ Q at 1] 9 and Ex.
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`E thereto.
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`Within two weeks of the Board’s notice —— well after TriZetto’s opposition had been dismissed
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`by the Board —— Farmaco improperly attempted to amend its denials of Request Nos. 21-23, 32-35, and
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`42 from Opposer’s First Set Of Requests For Admissions. SE Q at W 10-] l and Ex. F thereto. Each
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`of these attempted amendments related to a Request on the topic of one of the elements of a likelihood of
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`confusion
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`ln its attempted amendments, Farmaco essentially sought
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`to withdraw its earlier
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`representations that there was no likelihood of confusion between PHACET and FACETS, that the two
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`marks had significant differences in sight, sound and commercial
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`impression and that the parties’
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`respective fields of use were distinct.
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`l_d, Because Farmaco did not move the Board to allow it to
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`withdraw or amend its responses to TriZetto’s requests for admission, and because the opposition was
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`already dismissed, Farmaco’s attempted withdrawal of its previously sworn denials is of no effect.
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`fieg
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`Fed. R. Civ. P. 36(b); see also Giersch v. Scrjpps Networks lnc., 85 U.S.P.Q.2d 1306, I308 (T.T.A.B.
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`2007) (applying Rule 36(b) to proceedings before the Board).
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`III.
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`The Current Opposition.
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`The motivation behind Farmaco’s improper attempt to amend its discovery responses soon
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`became evident when, shortly after in May 2008, Farmaco amended its Notice of Opposition in the
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`present proceeding, adding the very ground for opposition it had just months ago so adamantly denied in
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`the Prior Opposition.
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`In complete contradiction to its prior position and the final judgment on the
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`merits in the Prior Opposition, Farmaco asserted that “Applicant’s FACETS mark so resembles
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`Opposer’s PHACET mark as to be likely .
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`.
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`. to cause confusion, or to cause mistake, or to deceive.”
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`_S_§e_ Amended Notice of Opposition in Opposition No. 9l l84047 (May 14, 2008) at 1] 4. Also for the
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`first time in the present proceeding, Farmaco alleged that it would be damaged by the registration of the
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`FACETS mark because “purchasers are likely to attribute the source of sponsorship of [TriZetto’s] goods
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`to [Farmaco].” E Q at 11 6.
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`Farmaco does not allege prior use of PHACET and indeed, there is no
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`evidence in the record whatsoever to indicate that Farmaco has ever used PHACET in U.S. commerce.
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`_S_e_e Kuks Dec]. and Ex. A thereto; Amended Notice of Opposition in Opposition No. 9] 184047 (May 14,
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`2008).
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`Farmaco’s current opposition is apparently based solely on the alleged constructive priority of
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`the PHACET Registration relative to the ’672 Application, despite the fact that (as Farmaco is well
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`aware) TriZetto has been using the FACETS mark continuously in connection with its software for over
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`fifteen years.
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`ARGUMENT
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`1.
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`Summary Judgment Standard.
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`The Federal Rules of Civil Procedure apply to this proceeding.
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`37 C.F.R. § 2.11 l6(a). Rule
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`56(c) of the Federal Rules provides that a party is entitled to summary judgment on a claim when the
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`record of evidence shows “there is no genuine issue as to any material fact and that the moving party is
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`entitled tojudgment as a matter of law.”
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`Fed. R. Civ. P. 56(c); see also Anderson v. Libe_rty_Lobby, Inc,
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`477 U.S. 242, 247 (1986). An issue is material only if“it may affect the decision, whereby the finding
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`ofthat fact is relevant and necessary to the proceedings.” Opiyland USA Inc. v. Great Am. Music Show,
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`l_n_c_., 970 F.2d 847, 849-50, 23 U.S.P.Q.2d l47l,
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`l472 (Fed Cir. 1992). Once the moving party has
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`carried its burden under Rule 56(0), the non-moving party “must do more than merely show that there is
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`some metaphysical doubt as to the material fact.” Matsushita Elec. Indus. Ltd. v. Zenith Radio Cplg,
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`475 U.S. 574, 586 (1986). The party opposing the motion may not rest on mere allegations or denials of
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`pleading, but must set forth specific facts showing a genuine need for trial. Anderson, 477 U.S. at 248.
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`To meet its burden, the non-movant must “identify specific evidence in the record, and articulate the
`99
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`‘precise manner’ in which that evidence support[s] [its] claim[s].
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`Forsyth v. Barr, 19 F.3d 1527, 1537
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`(5th Cir. 1994).
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`II.
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`Farmaco Is Judicially Estopped From Claiming A Likelihood Of Confusion Exists Between
`The Marks.
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`The doctrine of judicial estoppel
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`is invoked to bar a party from advancing an inconsistent
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`position to one it successfully relied on in a prior proceeding. New Hampshire v. Maine, 532 U.S. 742,
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`749 (2001) (“[W]here a party assumes a certain position in a legal proceeding, and succeeds in
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`maintaining that position, he may not thereafter, simply because his interests have changed, assume a
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`contrary position, especially if it be to the prejudice of the party who has acquiesced in the position
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`formerly taken by him.”) (internal citations omitted); Astor Chauffeured Limousine Co. v. Runnfeldt Inv.
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`fig, 910 F.2d 1540, l548 (7th Cir. 1990) (“The offense is not taking inconsistent positions so much as
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`winning twice, on the basis of incompatible positions”).
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`Judicial estoppel protects the sanctity and
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`integrity of the judicial process from those who try to play “fast and loose’’ with the courts. Lam i
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`Corp. v. ‘/_X_n\1erican Power Prods.. lnc., 228 F.3d 1365, 1377, 56 U.S.P.Q.2d 1445, 1454 (Fed. Cir. 2000)
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`(“[Judicial] estoppel applied where intentional self-contradiction is being used as a means of obtaining an
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`unfair advantage”).
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`The principle ofjudicial estoppel is recognized and followed by the Board. Data General Corp.
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`v. Johnson, 78 F.3d 1556, 1565 (Fed. Cir. 1996). The Board should invoke judicial estoppel
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`in this
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`proceeding to prevent Farmaco from asserting its blatantly inconsistent claim that a likelihood of
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`confusion exists between the ’672 Application and the PHACET Registration, after successfully arguing
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`no likelihood of confusion existed between the exact same marks for the exact same goods in the Prior
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`Opposition.
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`A.
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`The Elements Of Judicial Estoppel.
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`To determine whether judicial estoppel applies, the Board considers the following factors: (I)
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`judicial acceptance of the previously asserted inconsistent position; (2) risk of inconsistent results; (3)
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`effect of the pleading party’s actions on the integrity of the judicial process; (4) perception that the
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`tribunal has been misled; (5) reliance by the opposing party; (6) prejudice to the opposing party’s case as
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`a result of the inconsistent position; and (7) the party against whom estoppel
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`is invoked must have
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`received some benefit from the previously taken position. Boston Chicken,
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`lnc_._y. Boston Pizza lgtjl,
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`lnc_., 53 U.S.P.Q.2d 1053, 1055 (T.T.A.B. 1999).} Here, each and every one of the above factors weighs
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`heavily in favor of applyingjudicial estoppel against Farmaco.
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`1.
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`The Board Accepted Farmaco’s Arguments That There Was No Likelihood Of
`Confusion In The Prior Opposition.
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`As set forth in detail above, Farmaco’s current position before the Board is polar opposite to the
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`position it
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`took, and prevailed on,
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`in the Prior Opposition.
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`In the Prior Opposition, Farmaco
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`successfully argued that no likelihood of confusion existed between the PHACET Registration and
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`TriZetto’s FACETS mark as used in connection with its managed health care software, ultimately
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`resulting in a Board dismissal of the Prior Opposition with prejudice.
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`§e_e Section ll, i. A dismissal
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`with prejudice constitutes a decision on the merits and judicial acceptance of the prevailing party’s
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`Two years after the Board’s decision in Boston Chicken, the Supreme Court set out a non-exhaustive list of
`factors typically considered by the courts when deciding whether to applyjudicial estoppel. New Hampshire,
`532 U.S. at 750.
`The Supreme Court factors are: (l) the party’s later position must be ‘‘clearly
`inconsistent” with its earlier position; (2) judicial acceptance of an inconsistent position in the later
`proceeding would create “the perception that either the first or the second court was mislead;” and (3) party
`seeking to assert an inconsistent position would receive an unfair advantage or impose an unfair detriment
`on the opposing part if not estopped.
`l_d. at 750-51. This Board has not addressed the relationship
`between its Boston Chicken test and the Supreme Court’s New Hampshire decision. However, TriZetto
`respectfully asserts this Board’s Boston Chicken test requires consideration of the Supreme Couit’s three
`factors in addition to other potentially relevant factors.
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`l0
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`position. See Flowers li_1'dLis_. v. Interstate B__rands C__Q_rp., 5 U.S.P.Q.2d I580, I584 (T.T.A.B. 1987); c_f.
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`Reynolds v. Commissioner of Internal Revenue, 86l F.2d 469, 473 (6th Cir.
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`l998)(bankruptcy court’s
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`consent order constituted judicial acceptance of the estopped paity’s statements). Farmaco’s position in
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`the Prior Opposition was undeniably that there was no likelihood of confusion. See, e.g., Merritt Decl.
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`‘H5 and 7 and Exs. B and C thereto; Thiessen Decl.
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`{[1] 4-7 and Ex. A thereto. Accordingly,
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`in
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`dismissing the Prior Opposition with prejudice, the Board accepted Farmaco’s original position that no
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`likelihood of confusion existed between the PHACET Registration and TriZetto’s FACETS mark in
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`connection with managed health care software.
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`The Board further accepted and indeed relied on Farmaco’s position that no likelihood of
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`confusion existed in dismissing TriZetto’s counterclaim for cancellation of the PHACET Registration in
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`the present proceeding. fig Board Order in Opposition No. 91 184047 (Jan. 16, 2009) (“Board Order”).
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`In moving to dismiss TriZetto’s cancellation counterclaim, Farmaco explicitly and exclusively relied on
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`the decision on the merits from the Prior Opposition to argue that rg judicata barred the counterclaim.
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`§§§ Respondent Farmaco-Logica’s Motion to Dismiss Counterclaim for Res Judicata (Aug. 9, 2008).
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`In
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`dismissing TriZetto’s counterclaim, the Board necessarily relied on Farmaco’s previously inconsistent
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`position, stating that “there is no genuine issue of material fact that there has been an earlier final
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`judgment on the merits ofa claim [in the Prior Opposition].” §§§ Board Order.
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`There is thus no dispute that the Board accepted Farmaco’s prior inconsistent position in both the
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`Prior Opposition and the present opposition, in both cases to the advantage of Farmaco.
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`2.
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`Allowing Farmaco To Proceed Would Produce Inconsistent Results.
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`Notwithstanding its success in the Prior Opposition, Farmaco now asks the Board to deny
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`registration to TriZetto’s FACETS mark on the basis of a likelihood of confusion between the very same
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`marks for the very same goods that were before the Board in the Prior Opposition. There can be no
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`question that there is a risk here of inconsistent results — Farmaco is seeking exactly that. Now that
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`Farmaco has secured its PHACET Registration by asserting one position in the Prior Opposition, it asks
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`this Board to “reverse” the judgment on the merits, asserting the exact opposite position in order to
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`prevent TriZetto from registering its FACETS mark.
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`If Farmaco is allowed to assert a likelihood of
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`confusion in the present opposition and prevails on its claims, there will be one final decision from the
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`Board finding no likelihood of confusion between the PHACET Registration and TriZetto’s FACETS
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`mark for managed health care software and a second final decision from the Board finding precisely the
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`opposite. Such inconsistent results would not only muddy the waters of judicial precedent on the issue
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`of likelihood of confusion, but portend an immediate issue for appeal on the question of which of the
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`inconsistentjudgments is “correct.” Due to the clear danger of inconsistentjudgments, the Board cannot
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`allow Farmaco to have it both ways.
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`The doctrine of judicial estoppel is intended to prevent situations like that presented here.
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`S_eg,
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`e.g_., Minnesota Mining & Mfg. Co. v. Chernque lnc., 303 F.3d 1294, 64 U.S.P.Q.2d 1270, 1275-76 (Fed.
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`Cir. 2002) (judicial estoppel precluded patent
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`infringement defendants from arguing that the jury’s
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`findings were inconsistent since that position was in “direct conflict” with its previous position and
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`“defendants cannot now take the opposite position so as to derive advantage”); U.S. Philips Corp. v.
`
`
`Sears Roebuck & Co. 55 F.3d 592, 597, 34 U.S.P.Q.2d 1699, 1703 (Fed. Cir. 1995) (doctrine ofjudicial
`
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`estoppel precluded alleged infringer from relitigating its antitrust claims); Smith & Johnson Inc. v.
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`Hedaya Home Fashions, lnc., 42 U.S.P.Q.2d 1386, 1389 (S.D.N.Y. 1996) (copyright infringement claim
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`barred byjudicial estoppel after plaintiff admitted in the earlier action that it owned no copyright in the
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`design); Novaitis Consumer Health,
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`Inc. v. Johnson & Johnson—Merck Consumer_E_harm. Co., 129
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`F.Supp.2d 351, 57 U.S.P.Q.2d 1522, 1528 (D.N.J. 2000), judgment aff’d, 290 F.3d 578 (3d Cir. 2002)
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`(“Previously having unequivocally asserted the opposite argument,
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`[Defendant]
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`is now judicially
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`estopped from alleging that the ANC strength in fact correlates to or measures efficacy in vivo.”).
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`Farmaco should not be allowed to create inconsistent results by registering its PHACET mark over
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`TriZetto’s prior common law rights in FACETS through a claim of no likelihood of confusion and then
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`12
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`deny TriZetto a registration for the same mark and same goods by advancing the exact opposite
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`argument.
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`3.
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`Allowing Farmaco To Claim There Is A Likelihood Of Confusion Between The
`Marks Is An Affront To The Integrity And Authority Of The Board.
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`Allowing Farmaco to repudiate the position it successfully argued in the Prior Opposition
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`compromises the integrity and authority of the Board and its decisions. Although it did not reach the
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`testimony stage,
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`the parties and the Board expended significant
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`resources in litigating the Prior
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`Opposition. The Board ultimately adopted Farmaco’s asserted position of no likelihood of confusion in
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`the Prior Opposition. To now allow Farmaco to reverse its role at its convenience and argue the flipside
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`of the identical
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`issue not only gives Farmaco an unfair advantage over TriZetto, but threatens the
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`integrity and finality of the Board’s rulings.
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`S_ee_ U.S. Philips Corp., 55 F.3d at 597 (patent infringer’s
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`position